11-4109-cv Fed. Treasury Enter. v. SPI Spirits Ltd.

United States Court of Appeals

FOR THE SECOND CIRCUIT

August Term, 2011 (Argued: June 11, 2012 Decided: August 5, 2013)

Docket No. 11-4109-cv FEDERAL TREASURY ENTERPRISE SOJUZPLODOIMPORT, AND OAO MOSCOW DISTILLERY CRISTALL,

Plaintiffs-Appellants,
ZAKRYTOE AKTSIONERNOE OBSCHESTVO, LIVIZ,

Plaintiff,
v. SPI SPIRITS LIMITED, SPI GROUP SA, YURI SHEFLER, ALEXEY OLIYNIK, ALLIED DOMECQ INTERNATIONAL HOLDINGS B.V., ALLIED DOMECQ SPIRITS & WINE USA, INC., DBA ALLIED DOMECQ SPIRITS, USA, WILLIAM GRANT & SONS USA, WILLIAM GRANT & SONS, INC., SPIRITS INTERNATIONAL B.V., FKA SPIRITS INTERNATIONAL N.V.,

Defendants-Appellees.
B e f o r e: MCLAUGHLIN, CABRANES, AND CARNEY, Circuit Judges. Plaintiffs-appellants, a government-chartered Russian entity and its licensee, allege that defendants-appellees infringed certain registered trademarks

related to the Russian vodka known as Stolichnaya, in violation of Section 32(1) of the Lanham Act, 15 U.S.C. 1114(1)(b). The District Court dismissed their claims for want of statutory standing to sue. On appeal, plaintiffs argue that their interests in the trademarks are sufficient under the Act to prosecute these claims. Acknowledging that the Russian Federation is the owner of the Marks, plaintiff FTE nonetheless contends that it is entitled to sue for the Marks infringement because the Russian Federation entrusted it with care of the Marks, and it is either the Russian Federations assign or legal representative. See id. 1127. Cristall has derivative standing, they argue, as FTEs exclusive licensee for Stolichnaya vodka in the United States. Plaintiffs further maintain that they are entitled to proceed because the Russian Federation has ratified their suit. Because we conclude that plaintiffs have not alleged facts sufficient to support their suit in the claimed capacities, we AFFIRM the decision of the District Court. KATHLEEN M. SULLIVAN (Marc L. Greenwald, Jonathan Oblak, on the brief), Quinn Emanuel Urquhart & Sullivan, LLP, New York, NY (John B. Quinn, David W. Quinto, David H. Bromberg, Quinn Emanuel Urquhart & Sullivan, LLP, Los Angeles, CA, Redwood Shores, CA, on the brief), for PlaintiffsAppellants. EUGENE D. GULLAND (Oscar M. Garibaldi, Bingham B. Leverich, Hope Hamilton, Kerry L. Monroe, on the brief), Covington & Burling LLP, Washington, DC (Emily Johnson Henn, Michael C. Nicholson, Covington & Burling LLP, Redwood Shores, CA, New York, NY, on the brief), for Defendants-Appellees Spirits

International B.V., SPI Spirits Limited, SPI Group SA, Yuri Shefler and Alexey Oliynik.

DAVID H. BERNSTEIN (Michael Schaper, on the brief), Debevoise & Plimpton LLP, New York, NY, for Defendants-Appellees Allied Domecq

International Holdings B.V. and Allied Domecq Spirits & Wine USA, Inc.
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EDWARD T. COLBERT, Kenyon & Kenyon LLP, Washington, DC (Michelle M. Marsh, Kenyon & Kenyon LLP, New York, NY, on the brief), for

Defendants-Appellees William Grant & Sons USA and William Grant & Sons, Inc.

SUSAN L. CARNEY, Circuit Judge: Plaintiffs-appellants the Federal Treasury Enterprise Sojuzplodoimport (FTE), a state-chartered entity of the Russian Federation, and OAO Moscow Distillery Cristall (Cristall), FTEs exclusive licensee (FTE and Cristall together, plaintiffs) appeal from the judgment of the District Court (Daniels, Judge) dismissing their claims for trademark infringement against defendants SPI Spirits Limited and other related individuals and corporations (together, defendants). Plaintiffs infringement claims rest on a theory that defendants misappropriated and, since the early 1990s, have made unauthorized commercial use in the United States of certain United States-registered trademarks related to Stolichnaya-brand vodka (the Marks).1 Plaintiffs maintain that defendants asserted title to the Marks is invalid, and that defendants use of the Marks infringes the rights of the Marks purported true owner, the Russian Federation. In this appeal, we examine whether plaintiffs
The original mark was registered in the U.S. Patent and Trademark Office in 1969 by a Soviet entity. The Marks also refer, however, to derivative marks registered thereafter by or on behalf of the Soviet Union and others.
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themselves have sufficient claim to the Marks to sue for infringement under the Lanham Act (the Act). We conclude that, under the operative provisions of the Act, FTE is neither (1) the Russian Federations assign of the Marks (for it has not been granted all relevant rights associated with the Marks by a duly executed writing) nor (2) its legal representative (for the complaint provides no basis to conclude that the Russian Federation is unable to pursue Lanham Act remedies). See 15 U.S.C. 1127. We further conclude that Cristall may not sue, since its rights as a plaintiff are purely derivative of those held by FTE, and FTE may not grant rights greater than its own. We reject plaintiffs joint argument that they are entitled to proceed because the Russian Federation has ratified their suit. Neither plaintiff, therefore, is entitled to sue for infringement under 15 U.S.C. 1114(1), and, accordingly, we AFFIRM the District Courts dismissal of plaintiffs Third Amended Complaint with prejudice. BACKGROUND Having set forth the factual background of this case at length in Fed. Treasury Enter. Sojuzplodoimport v. Spirits Intl N.V., 623 F.3d 61, 6366 (2d Cir. 2010) (FTE II), we address the facts here only insofar as they are relevant to the legal issues implicated by this appeal. Because plaintiffs

challenge the District Courts grant of a motion to dismiss plaintiffs Third Amended Complaint (the operative complaint or complaint), the description provided below is drawn primarily from the allegations set forth in that document and from documents attached to it, incorporated in it by reference, or otherwise relied on by plaintiffs in bringing suit. See ATSI Commcns v. Shaar Fund, Ltd., 493 F.3d 87, 98 (2d Cir. 2007). 1. The Trademarks This dispute arises out of the contested ownership of American trademarks related to Stolichnaya vodka, a well-known distilled spirit originally made in Russia, and whose iconic Russian name can be translated as from the capital.2 According to the complaint, STOLICHNAYA brand vodka has been owned either by the Soviet Union or by the Russian Federation for decades. Fed. Treasury Enter. Sojuzplodoimport v. Spirits Intl B.V., Third Am. Compl. 27, No. 04-08510 (S.D.N.Y. Feb. 22, 2011), ECF No. 142 (Am. Compl.), J.A. 261. In the late 1960s, the Soviet Union, acting through a state-run enterprise, registered a trademark in Stolichnaya with the United States Patent and Trademark Office (the USPTO). Over the subsequent decades, the USPTO issued other trademark registrations

The label of this brand of vodka includes a representation of the famous Hotel Moscow (or Hotel Moskva), located in the heart of the capital, near the Kremlin.
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relating to Stolichnaya to various entities.3 In 1990, as the Soviet Union collapsed, Evgeniy Filippovich Sorochkin, the General Director of VVO-SPI (the Soviet enterprise then holding the Marks), sought personally to acquire VVO-SPIs assets, including the Marks, through a new corporation. The corporation formed by Sorochkin purported to privatize VVO-SPI. It then entered into a series of complex transactions that ultimately vested all defendants with at least putative interests in the Marks, either by license or assignment.4 In the early 2000s, the Russian Federation as successor to interests held by Soviet-created state enterprises is alleged to have discovered that Sorochkin and others had failed to comply with laws governing the privatization of state assets when they conducted the relevant transactions a decade earlier. In December 2000, a Russian court held that,

Related marks are also registered in foreign jurisdictions, but those do not concern

us here. Defendants are individuals and corporations whose claimed title to the Marks or license to use the Marks derives from the allegedly ineffective privatization of VVO-SPI. Defendants are: Yuri Shefler and Alexey Olinik, the individuals who allegedly controlled the private corporation that attempted to acquire VVO-SPIs assets, including the Marks; Spirits International B.V., formerly known as Spirits International N.V., to which Shefler and Olinik purported to transfer the Marks; Allied Domecq International Holdings, B.V. and Allied Domecq Spirits & Wine USA (together, Domecq), later assignees of the Marks; SPI Group S.A., a corporation that has claimed ownership of the Marks, and SPI Spirits Limited, both of which are part of the SPI Group, a group of companies allegedly owned or controlled by Shefler and Oliynik; and William Grant & Sons, Inc. and William Grant & Sons USA (collectively, Grant & Sons), distributors allegedly licensed by other defendants to distribute vodka bearing the Marks in the United States.
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under Russian law, VVO-SPI continued to exist as a public entity. As one consequence of that holding, and pursuant to applicable Russian laws, the Russian Federation then withdrew the rights and property entrusted to [VVO-SPI], and gradually, through manifold legal and bureaucratic maneuvers, re-assumed its rights, including the rights to the Marks. Am. Compl. 132, J.A. 283. FTE describes Russian law as prohibiting governmental bodies from conduct[ing] business activities. Am. Compl. 133, J.A. 284. After retrieving its rights to the Marks, therefore, the Russian Federation, acting through its Ministry of Agriculture and Ministry of Property Relations, formed FTE as a new state-chartered entity charged with (as alleged here) exploit[ing] the STOLICHNAYA trademarks on behalf of the Russian Federation. Id.; see also Am. Compl. 132, J.A. 283. 2. Formation of FTE In a series of decrees issued over time, the Russian Federation endowed FTE with certain rights. Centrally relevant here are three source documents conveying those rights: (1) FTEs Charter, which was adopted by the Russian Federation in a March 2002 decree;5 (2) a July 2002 decree that

The Charters 2002 adoption followed a decree issued in late December 2001, which created FTE and required the Ministry of Agriculture to craft a charter for the new organization. The terms of the 2001 decree carry little substance.
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governs FTEs rights to various trademarks, including the original United States-registered Stolichnaya Mark; and (3) a January 2005 decree that addresses FTEs right to prosecute suits in foreign courts.6 FTEs Charter sets forth the Purposes and Subject of Activities of the Enterprise, the Property of the Enterprise, and the Rights and Responsibilities of the Enterprise. It does not, however, expressly mention Stolichnaya or any of the Marks. Rather, the Charter advises generally that FTE was established for the purposes of organizing the manufacture of products, . . . [and] wholesale and retail trade of vegetables, fruits, spices, coffee, tea, soft drinks, and all types of strong . . . drinks a phrase that, none dispute, includes vodka and other alcoholic beverages. Charter 10, J.A. 416. The Charter also imparts to FTE the authority to organize the export and import of all types of strong . . . drinks and to us[e] in accordance with established procedure the trade marks of strong drinks [and] alcoholic products. Charter 11(c),(i), J.A. 417. It entitles FTE to protect[ ] and restor[e] . . . the Russian manufacturers violated rights to trade marks of any products. Charter 11(j), J.A. 417.

In our review of these key documents and relevant Russian laws, we rely on translations provided by the parties in the Special Appendix. The parties have not called to our attention any material disputes as to the accuracy of those translations.
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The Charter also outlines the relationship between FTE and the Russian Federation, declaring that property entrusted to FTE, Am. Compl. 13, J.A. 259, shall be in federal ownership, but shall be assigned [to FTE] in accordance with established procedure for operative administration. Charter 13, J.A. 417. With respect to property assigned to it, the Charter limits FTEs authority. For example, in addition to the unexceptional limitation that FTE shall not be entitled to carry on activities which are not provided for by [the] Charter, FTE also is not . . . entitled to alienate or otherwise dispose of the property assigned [to it] except with the consent of the federal executive authorities. Charter 12, 17, J.A. 417. In addition, the Charter retains for the Government of the Russian Federation the right to impound any property assigned to [FTE] that is excessive, is not used at all or is not used in conformity with its purpose. Charter 18, J.A. 417. Finally, the Charter expressly contemplates the possibility of winding-up FTE in accordance with established procedure by decision of the Government of the Russian Federation and on other grounds contemplated by civil legislation of the Russian Federation. Charter 40, J.A. 420.

In contrast to the Charter, the July 2002 decree refers expressly to the original United States-registered Stolichnaya Mark:7 it authorizes FTE to use and dispose (without the right to assign), in accordance with the procedure established by the Ministry of Agriculture, certain listed alcoholic and spirituous marks, including the Stolichnaya Mark. July 2002 Decree 1, J.A. 423. It further directs that the Ministry of Agriculture of the Russian Federation . . . [will] develop and approve the procedure for the use by [FTE] of the trade marks. Id. 2. Issued three years later, in response to inquiries by foreign courts, the January 2005 decree was intended to confirm[ ] FTEs right to sue in foreign courts in its own name to protect or recover the Russian[ ] Federations rights to trademarks for alcoholic products [abroad]. Am. Compl. 140, J.A. 285. It states that FTE is charge[d] with represent[ing] the interests of the Russian Federation in the courts on matters of recovery and protection of the rights of the Russian Federation to the trademarks for alcoholic products abroad, and to realize registration of the rights of the Russian Federation to the mentioned trademarks abroad. 2005 Decree 1, J.A. 425. Of note for present purposes, it includes an express sunset

The July 2002 decree identifies the relevant trademark as: Stolichnaya (label), certificate No. 38388 dated 10 October 1969. July 2002 Decree, List *6, J.A. 423.
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provision, providing that its authorization will be valid only until January 1, 2006, id. 2, but FTE further alleges that unnamed [s]ubsequent decrees, the newest of which remains in force, have continued to confirm FTEs authority. Am. Compl. 140, J.A. 285. FTE has exercised its authority with regard to the Marks in a number of ways, it alleges. Among other things, at an unspecified time, it granted an exclusive license to Cristall to manufacture, for sale in the United States, vodka and other products that bear the Marks. Further, FTE has sued to enforce Stolichnaya trademarks, not only in the United States, but in the Netherlands and other countries as well. 3. Procedural History In October 2004, FTE sued defendants Shefler, Oliynik, and Domecq in the United States District Court for the Southern District of New York.8 In its original complaint, FTE asserted ten separate claims in the nature of unfair competition and trademark or copyright infringement, some under the Lanham Act, others under state common law, and one under

Initially, Obschestvo S Ogranichennoi Otvetstvennostyu Chernogolovskii Zavod Alkogolnoi Produkcii (Ost Alco), an FTE-licensed manufacturer, was a plaintiff in this suit. Ost Alco transferred its interest to a second manufacturer licensed by FTE, Zakrytoe Aktsionernoe Obschestvo (Liviz), which appears as a plaintiff in the above caption. As plaintiffs explain the progression, Liviz stopped pursuing this case while it was initially on appeal, and FTE [then] licensed its current co-plaintiff Cristall. Appellants Br. 5 n.1 (citations omitted).
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Article 10 of the Paris Convention for the Protection of Industrial Property. Original Complaint (Orig. Compl.) 105-47, J.A. 69-77. In addition to seeking defendants related profits and FTEs damages, FTE requested a declaratory judgment confirming its right to the Marks; rectification of the U.S. trademark register to show FTE as the Marks holder; and cancellation of STOLICHNAYA-Related Marks. Orig. Compl. at 35, J.A. 78. Defendants moved to dismiss, arguing that FTE lacked statutory standing to enforce the Marks and that defendant Domecqs claimed rights in the Marks had become incontestable under the Act.9 See 15 U.S.C. 1065(1)-(4). The District Court granted defendants motion, agreeing that the Marks had become incontestable and that therefore FTEs challenge to the validity of defendants assignment of the Marks to Domecq was barred. See Fed. Treasury Enter. Sojuzplodoimport v. Spirits Intl N.V., 425 F. Supp. 2d 458 (S.D.N.Y. 2006) (FTE I), vacated in part by FTE II, 623 F.3d 61 (2d Cir. 2010). The District Court also considered and dismissed certain of FTEs common law claims. Id. at 473-76. On appeal, our Court affirmed the District Courts dismissal of FTEs common law claims, but vacated the dismissal of FTEs Lanham Act

The status of incontestability serves, subject to certain qualifications, as conclusive evidence of the . . . registrants exclusive right to use the registered mark. 15 U.S.C. 1115(b).
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claims. See FTE II, 623 F.3d at 63. In contrast to the District Court, we concluded that the incontestability doctrine posed no obstacle to FTEs challenge to defendants claim of ownership in the Marks absent a demonstration that defendants had received the Marks through a valid assignment. Id. In a concurrent summary order, however, we found that despite additional briefing submitted at our request the record remained too sparse to determine whether, under Federal Rule of Civil Procedure 19, additional parties required to be joined if feasible (in particular, the Russian Federation) were missing from the litigation. In this regard, we observed that notwithstanding its literal grant to FTE of the right to represent the interests of the Russian Federation in the courts on matters of recovery and protection of the rights of the Russian Federation to the trademarks for alcoholic products abroad the January 2005 decree on its face, does not appear to be an obvious transfer of ownership . . . to FTE. Fed. Treasury Enter. Sojuzplodoimport v. Spirits Intl N.V., 400 F. Appx 611, 614 (2d Cir. 2010) (summary order). The panel left it to the District Court on remand to determine, in the first instance, whether the required parties are before it. Id. In February 2011, FTE filed its third amended complaint. In it, FTE added its exclusive licensee, Cristall, as a plaintiff, and Grant & Sons,
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SPIs new distributor, as a defendant. Defendants again moved to dismiss, arguing that FTE and, by extension, Cristall lacked standing to sue under the Lanham Act. Looking to the Lanham Acts requirement that a party be a registrant to have standing to sue under Section 32(1), 15 U.S.C. 1114(1), and the Acts definition of registrant as embracing the registrants legal representatives, predecessors, successors and assigns, 15 U.S.C. 1127, the District Court agreed with defendants and held that plaintiffs lacked standing under the Lanham Act. It concluded that FTE did not qualify as an assign of the Russian Federation within the meaning of the Lanham Act, finding insufficient the complaints allegation that FTE was entrusted . . . with and granted the exclusive right to use the Marks. Am. Compl. 13, J.A. 259. Reasoning that FTEs Charter indicates in clear and unambiguous language that FTEs rights over the trademarks entrusted to it are neither tantamount to ownership, nor sufficient to permit Plaintiff FTE to exclude the Russian Federation from taking action with respect to the Marks, and noting FTEs concession that the Russian Federation not FTE owned the Marks, the District Court found the grant inadequate for Lanham Act standing purposes, because a trademark assignment requires the sale or transfer of all rights in the mark. Fed. Treasury Enter. Sojuzplodoimport v.
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Spirits Intl B.V., No. 04 Civ. 0851, 2011 WL 4005321, at *6-7 (S.D.N.Y. Sept. 1, 2011) (FTE III) (emphasis added); see also Am. Compl. 136 (referring to the Russian Federations ultimate ownership of both FTE and the Marks). The District Court held further that FTE was not a legal representative of the Russian Federation within the meaning of the Act. The court explained that, although the January 2005 decree authorized FTE to sue to protect the Marks on the Russian Federations behalf, the plain and ordinary meaning of the term legal representative is one who appears on behalf of a trademark owner that is unable or incapable of representing itself and enforcing its own rights. Id. at *5. The court held that FTE had failed to allege facts plausibly showing that it was somehow necessary for FTE to pursue this litigation in its own name or that the Russian Federation was unable to appear before the court. Id. at *5-6. Judgment for defendants was entered on September 8, 2011. This appeal followed. DISCUSSION I. Legal Framework Standard of Review. We review de novo the District Courts grant of defendants motion to dismiss for want of statutory standing. See Lerner v. Fleet Bank, N.A., 318 F.3d 113, 120 (2d Cir. 2003). On review, we accept all
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well-pleaded allegations in the complaint as true and draw[ ] all reasonable inferences in plaintiff[s] favor. Bigio v. Coca-Cola Co., 675 F.3d 163, 169 (2d Cir. 2012) (alteration and quotation marks omitted). To survive a motion to dismiss, the complaint must plead enough facts to state a claim to relief that is plausible on its face. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). A claim will have facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). Choice of Law. Although the Marks were developed in Russia and are used around the world, plaintiffs claims in this suit derive from the Marks registration in the United States. Therefore, United States law provides the relevant framework for addressing whether plaintiffs are entitled to bring suit under the Lanham Act. See Berni v. Intl Gourmet Rests. of Americas, Inc., 838 F.2d 642, 646 (2d Cir. 1988). To proceed under the Act, a plaintiffs rights in the mark must be established with reference to U.S. law. Id. (concluding that former foreign shareholders in a United States trademark registrant incorporated abroad lacked statutory standing to bring a Lanham Act trademark infringement claim).

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Plaintiffs contend, however, that the rights transferred by the charter [and other documents] must be determined under the law of the Russian Federation, and argue that FTEs rights under Russian law are sufficient to support their standing to sue here. Appellants Br. 22. For support, they cite to our opinion in Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82 (2d Cir. 1998), where we stated in a copyright dispute involving a Russian plaintiff that Russian law is the appropriate source of law to determine issues of ownership of rights. Id. at 90. Importantly, however, in Itar-Tass we declined to consider which law determined the validity of an assignment of rights, id. at 90 n.11, and we observed that [u]nder United States law, an owner . . . may sue for infringement in a United States court only if it meets the standing test set out by the Copyright Act, id. at 91. For our purposes here, then, Itar-Tass supports plaintiffs view that Russian law may be relevant to this dispute. But Russian law is only relevant in helping to determine the relationship between FTE and the Russian Federation vis-a-vis the Marks. United States law guides our determination of whether this relationship extends sufficient rights to FTE for it to be characterized as an assign or legal representative with standing to sue under Section 32(1) of the Lanham Act.

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II.

Lanham Act Standing The Lanham Act was intended to make actionable the deceptive

and misleading use of marks and to protect persons engaged in . . . commerce against unfair competition. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 767-68 (1992) (quoting 15 U.S.C. 1127). Toward this end, the Act provides separate causes of action for, among other things, infringement of registered and unregistered trademarks. See 15 U.S.C. 1114 (registered trademark); id. 1125 (unregistered trademark or trade dress); see also Two Pesos, 505 U.S. at 767-68. Section 32(1) of the Act, 15 U.S.C. 1114(1) at issue here protects only registered trademarks. It provides a cause of action against any person who use[s] in commerce any . . . imitation of a registered mark . . . likely to cause confusion, or to cause mistake, or to deceive. Id. This cause of action is available, however, only to registrant[s] of the trademarks at issue, a term the Act defines as embracing the actual registrants legal representatives, predecessors, successors and assigns. 15 U.S.C. 1127. In other words, only registrants as statutorily defined have statutory standing to bring an action under Section 32(1). See Allen v. Wright, 468 U.S. 737, 751 (1984) (explaining that to have standing, a plaintiffs complaint [must] fall within the zone of interests protected by the law invoked). This
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provision contrasts with Section 43 of the Act, which allows suits by any

person who believes that he or she is or is likely to be damaged by the

defendants actions. 15 U.S.C. 1125(a)(1) (emphasis added). FTEs standing here in this action under Section 32(1) thus hinges on whether it has alleged facts plausibly showing that it falls within the statutes definition of registrant.10 As FTEs exclusive licensee, Cristalls standing depends in its entirety on FTEs. FTE acknowledges as it must that the Russian Federation is the true owner of the Marks. See Am. Compl. 78, J.A. 270. It contends nonetheless that it falls within the Acts definition of registrant. First, it asserts that the Russian Federation has assigned to it the Federations ownership interest in the Marks. Second, and alternatively, it maintains that it is the Russian Federations legal representative for purposes of pursuing this infringement claim. We note as an initial matter that in none of FTEs complaints has it expressly alleged that it is either an assign or a legal representative. FTE
The question whether a plaintiff has statutory standing under a particular statute often overlaps with the question whether she has a cause of action under that statute. Indeed, the Supreme Court has observed that it may be exceedingly artificial to draw a distinction between the two. Steel Co. v. Citizens for a Better Environment, 523 U.S. 83, 97 n.2 (1998). Generally, however, the cause of action assessment concerns whether any plaintiff has a cause of action under the statute, whereas the statutory standing assessment concerns whether this plaintiff has a cause of action under the statute. Id.
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argues, however, that the complaints allegation that FTE is the only entity with the right to use and dispose of the Marks, Am. Compl. 136, J.A. 284, is sufficient to establish statutory standing at this stage. Although it may be peculiar that the relevant terminology does not appear in the operative complaint, this absence is of course not fatal to plaintiffs standing arguments, for we may perform a functional analysis to determine whether the Acts requirements are met. And at this stage, we may look not only to the complaint but also to documents incorporated into the complaint by reference and relied on by the plaintiffs in bringing suit. See Border v. Cablevision Sys. Corp., 418 F.3d 187, 196 (2d Cir. 2005). Such documents include the Charter and the 2002 and 2005 Decrees. In examining these documents, we are mindful that any ambiguities should be resolved in plaintiffs favor. See Subaru Distribs. Corp. v. Subaru of Am., Inc., 425 F.3d 119, 122 (2d Cir. 2005). We first address whether FTE is an assign of the Russian Federation with regard to the Marks, and conclude that it is not. Second, we address the meaning of the phrase legal representative as used in the Act an issue that appears to be one of first impression among federal courts of appeals and conclude that the District Court correctly determined that this term denotes not merely one whom an appointing entity designates its legal
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representative, but requires in addition that the appointing entity be legally unable to bring suit on its own behalf. Because FTE has not sufficiently alleged that the Russian Federation is unable to appear in this litigation, FTE is not a legal representative with standing to sue under Section 32(1). A. FTE Is Not an Assign or its Equivalent under the Lanham Act

Plaintiffs argue that FTE is an assign of the Marks because it has been granted exclusive rights to the Marks, including the right to use, license and enforce the Marks in essence, maintaining that it is either a true assign, or, as an exclusive licensee of the Russian Federation, it has rights tantamount to those conveyed in an assignment. Appellants Br. 19. Defendants retort that FTEs rights to the Marks fall short of those required to constitute an assignment for purposes of the Act. We think that defendants have the better of the argument. At least two requisites are inherent in the concept of assignment under the Act: (1) the need for the relevant assigning document to be effected by instrument[ ] in writing duly executed, 15 U.S.C. 1060(a)(3); and (2) the need for the assignment to transfer an ownership interest in the marks at issue. Because the conveyance to FTE falls short on these measures, we conclude that FTE is not an assign of the Russian Federation for statutory

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standing purposes under the Act. We then turn to the question whether, casting FTE as the Russian Federations exclusive licensee, FTEs rights are nonetheless tantamount to those of an assign. We answer that question, too, in the negative.

1. Duly Executed Instrument in Writing

Section 10 of the Act declares, Assignments shall be by instruments in writing duly executed, 15 U.S.C. 1060(a)(3), and directs the USPTO to maintain a record of information on assignments, id. 1060(a)(5). The various documents presented to support plaintiffs position that FTE is an assign of the Russian Federation do not resemble an assignment under United States law, even taking them flexibly and as a cumulative whole. As discussed above, although the Charter refers generally to property assigned to FTE,11 it does not expressly mention the Marks. The July 2002 decree, which does refer to a Stolichnaya Mark, does not declare that the Russian Federation is assigning anything to FTE; rather, the document provides that the Russian Federation is conveying to FTE the rights to use and dispose of one of the Marks, without any mention at all of assignment, or transferring ownership, or the good will symbolized by the Marks. J.A. 423.
Paragraph 16 provides in relevant part, The sources of formation of the Enterprises property shall be as follows: (a) property assigned to the Enterprise in accordance with established procedure. Charter 16, J.A. 417.
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Although we do not here purport to set out a bright-line rule requiring that Lanham Act assignments take a particular written form, we note just how far the Charters (and the decrees) language lies from the unequivocal transfer of title and good will normally required to effectuate an assignment of rights. Cf. Restatement (Second) Contracts 324 (It is essential to an assignment of a right that the [assignor] manifest an intention to transfer the right to another person without further action or manifestation of intention by the [assignor].). Regulations issued by the USPTO reflect an expectation that assignments will be clearly stated in writing, and the assigned marks identified with specificity. Thus, to register a trademark assignment, the USPTO requires that the assignee submit a cover sheet with information including [e]ach trademark registration number and each trademark application number or a copy of the application or a reproduction of the trademark. 37 C.F.R. 3.31(a)(4)(i). None of the documents at issue here states that Russia has transferred title to the Marks to FTE, and only one Mark is identified in any of the documents empowering FTE. Although it may seem formalistic, the writing requirement is rooted in real policy concerns. In the copyright context, the Ninth Circuit has explained that the Copyright Acts assignment-related writing requirement,
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17 U.S.C. 204(a), serves the ends of (1) ensuring that the owner of intellectual property will not assign it inadvertently; (2) forcing parties to determine the precise rights being transferred; and (3) enhancing predictability and certainty of ownership. Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 557 (9th Cir. 1990). Similarly, the predictability and certainty arising from a clear writing assigning a trademark dovetail comfortably with the standing requirements of Section 32(1). A clear writing effecting an assignment signals to the parties and the world that the assign is the party that owns the mark and is authorized to exclude others from use. There is no such writing in the record before us, nor is such a writing adequately alleged in the complaint.

2.

Transfer of Ownership Rights in the Marks

Even if we were to treat the Acts formal writing requirement as potentially satisfied by aspects of the Charter and the 2002 and 2005 decrees, those documents leave the Russian Federation with not only ownership, but simply too great an operational interest in the Marks for us to consider the Federation as having assigned the Marks to FTE for purposes of the Act. According to one acknowledged authority in the field, an assignment is an outright sale of all rights in that mark. 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition 18:1 (4th ed.
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2012) (emphasis added). Professor McCarthy further advises that an assignment is by definition . . . a legal document that transfers title to the mark. Id. 18:7; see also id. 18:15 (After an assignment, the assignor has divested itself of its trademark rights.). Other commentators have echoed this view. See, e.g., Siegrun D. Kane, Kane on Trademark Law 21:1 (2011 ed.) (A trademark assignment is a transfer of ownership. The trademark owner (assignor) gives up all rights to the mark. Those rights are acquired by the assignee, who stands in the shoes of the assignor.); Restatement (Third) of Unfair Competition 34 (1995) (The owner of a trademark, trade name, collective mark, or certification mark may transfer ownership of the designation to another through an assignment.).12 Regulations promulgated by the USPTO similarly suggest its expectation that a trademark assignment will effect a transfer of ownership. Those concerning the issuance of a [n]ew certificate on change of ownership require that [t]he assignment or other document changing title must be recorded in the [USPTO]. 37 C.F.R. 2.171(a) (emphasis added).

In ICEE Distributors, Inc. v. J&J Snack Foods Corp., 325 F.3d 586 (5th Cir. 2003), the Fifth Circuit, citing to both the McCarthy and the Kane treatises, similarly described the assignment of a mark as the assignee step[ping] into the shoes of the assignor . . . . [and thereby] acquir[ing] . . . all the rights and priorities of the assignor. Id. at 593 (emphasis added and internal quotation marks omitted). Other circuits have endorsed the approach, also describing an assignee as step[ping] into the shoes of the assignor. Carnival Brand Seafood Co. v. Carnival Brands, Inc., 187 F.3d 1307, 1310 (11th Cir. 1999); Premier Dental Prods. Co. v. Darby Dental Supply Co., 794 F.2d 850, 853 (3d Cir. 1986).
12

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Finally, in the more specific context of standing under Section 32(1), Professor McCarthy concludes that both as a matter of statutory interpretation and under general principles of trademark law, only the owner of the trademark is entitled to sue for its infringement. 6 McCarthy 32.3. And district courts in this Circuit have long held and persuasively reasoned that a party is not an assign for standing purposes under the Lanham Act unless that party owns the mark at issue.13 Our own case law on the subject is sparse, but we appear to have accepted that a transfer of an ownership interest in a mark is a predicate to standing for any putative assign. In DEP Corp. v. Interstate Cigar Co., 622 F.2d 621 (2d Cir. 1980), for example, we considered whether the exclusive distributor of soap bearing a registered trademark could sue for infringement. To determine whether the plaintiff had functionally been assigned the mark at issue, we looked to the language of the distribution agreement. That

See Prince of Peace Enters., Inc. v. Top Quality Food Market, LLC, 760 F. Supp. 2d 384, 391 (S.D.N.Y. 2011) ([L]icenses for particular uses, or other documents not purporting to transfer ownership in the mark, are not assignments as the alleged assignor has not parted with all rights.); Calvin Klein Jeanswear Co. v. Tunnel Trading, No. 98 Civ. 5408, 2001 WL 1456577, at *4 (S.D.N.Y. Nov. 16, 2001) (Where a licensing agreement does not grant the licensee a property interest in the mark or otherwise assign to the licensee the registrant-licensors ownership rights, the licensee, even if exclusive, cannot enforce the mark under 1114.); Nordco A.S. v. Ledes, No. 95 Civ. 7753, 1997 WL 570546, at *3 (S.D.N.Y. Sept. 15, 1997) (finding no valid assignment of trademark rights on the ground that there is no document conveying title or ownership of the trademark to [the plaintiff]); Silverstar Enters., Inc. v. Aday, 537 F. Supp. 236, 239 (S.D.N.Y. 1982) ([A]n assignment of a trademark is a transfer of the entire interest.).
13

26

document provided that the plaintiff shall not during the continuance of this arrangement or thereafter have or claim any right whatsoever whether of user or otherwise to or in any such trade marks, trade names or brands used in connection with [p]roducts. Id. (internal quotation marks omitted). We found this express language dispositive, even if the plaintiff as an exclusive distributor has the greatest interest in bringing an infringement action. Id. at 624. The agreement deni[ed] the [plaintiff] any property interest in the trademark, id. at 623, and we accordingly concluded that the plaintiff could not bring a claim for infringement under Section 32(1). FTE argues that these cases and authorities misinterpret the Act insofar as they require that an assign obtain ownership of or title to a mark. According to FTE, Congress could have limited standing under Section 32(1) to trademark owners, as it did elsewhere in the Act, see 15 U.S.C. 1125(d)(1)(A) (providing standing in cyberpiracy cases only to the owner of the mark). Instead, Congress chose to enlarge standing for violations of Section 32(1) to include a registrants legal representatives, predecessors, successors and assigns. FTE maintains that this list of proper plaintiffs includes entities that do not actually own the trademarks at issue, and so ownership cannot be a sine qua non of statutory standing. Further, FTE notes that Professor McCarthy who elsewhere asserts that an assignment

27

amounts to an outright sale of all rights in that mark also observes that an assignment is valid even though it may reserve certain rights of use of the mark in the assignor. 3 McCarthy 18:8. Here, however, we need not precisely delineate the bundle of rights that a trademark assignment must extend to a purported assignee to support the latters standing to bring a Section 32(1) suit. It is enough to say that in this case, in consideration of all of the relevant authorities, too many rights remain with the Russian Federation for it to be deemed to have assigned the Marks to FTE. Thus, the Charter expressly states that [t]he property of the enterprise shall be in federal [i.e., Russian Federation] ownership, and that the property shall be transferred to FTE only for operative administration in accordance with the laws of the Russian Federation. Charter 13, 14, J.A. 417. FTE argues that, under Russian law, providing an assignment for operative administration is tantamount to an assignment under the Lanham Act. For example, FTE advises that article 113 of the Russian Civil Code provides that the property of a unitary enterprise like FTE shall belong to that enterprise by right of economic jurisdiction or operative management. Special Appendix (SPA) 73 (emphasis added). Further, parties that possess property by right of operative administration are

28

legally authorized under Russian Civil Code article 305, we are told, to defend their possessory rights against the actual owner of the property. SPA 79. Russian law, however, appears to be much more equivocal than FTE suggests. Defendants point to provisions of the Russian Civil Code that suggest strongly that state unitary enterprises are not endowed with the right of ownership. Russian Civil Code art. 113(1), SPA 73. Further, Russian law allows institutions within which property has been consolidated by right of operative management to possess, use, and dispose of this property

within the limits established by a law in accordance with the purposes of its
activity, the assignments of the owner of this property, and the designation of this property. Id. art. 296(1), SPA 76 (emphasis added). Without purporting to tender a definitive reading of Russian law, we can nonetheless observe that the Civil Code is consistent with the limitations placed on FTEs rights to the Marks by the Charter and decrees, and does not so enhance FTEs operational rights as to render it an assign under United States trademark law. The Charter expressly prohibits FTE from alienating or otherwise disposing of any property assigned to it by right of operative administration, and allows the Russian Federation to impound property transferred to FTE and to wind-up FTE. Similarly, the July 2002 decree provides that FTE has the right to use and dispose (without the right

29

to assign) the Marks, and states that any such use shall occur only in accordance with the procedure established by agencies of the Russian Federation. J.A. 423. Not only do Russian law and the relevant decrees direct that the Russian Federation retain formal title to the Marks, then, but they expressly reserve to the Russian Federation certain rights that are generally inherent in the concept of ownership. Thus, FTE has no right to assign the Marks absent permission from the Russian Federation, and nothing that we have been directed to in the governing documents suggests that FTE has been conveyed a general right to exclude others from use of the Marks. See 1 McCarthy 2:14 (A Trademark is a Right to Exclude). FTE has identified no constraint on the Russian Federations authority to use the Marks itself if, for example, the Federation determines in its sole discretion that the Marks are not being used for their proper purpose. The Russian Federation also appears free to withdraw FTEs rights to use the Marks, and to grant others similar rights. Although in the future we may find a trademark assignment effective to confer standing where the assignment reserves certain rights in the assignor, FTE has not cited any persuasive authority within or outside our Circuit holding that a valid assignment of a trademark right can occur when the putative assignor retains the right to rescind the trademark, to

30

grant a license for its use to others, or to exclude others from using the mark. We decline to create such a rule here.

3.

FTEs Statutory Standing as an Exclusive Licensee

FTE argues further that even if the Russian Federation has not actually assigned the Marks, FTEs exclusive right to use the Marks in the United States and abroad in effect, an exclusive license is sufficient to support FTEs statutory standing to sue under Section 32(1). Some district court opinions appear to offer support for this argument. See, e.g., Telebrands Corp. v. Del Labs., Inc., 719 F. Supp. 2d 283, 293 (S.D.N.Y. 2010) (holding that where an exclusive licensee has broad rights to sell a product with a registered trademark royalty free, [and] for a potentially unlimited period and does not set forth any restrictions on [the licensees] ability to enforce the trademarks, the licensee has standing to sue for infringement under Section 32(1)); Bliss Clearing Niagara, Inc. v. Midwest Brake Bond Co., 339 F. Supp. 2d 944, 959-61 (W.D. Mich. 2004) (concluding that an exclusive license that also extends the right to pursue actions for infringement of the mark is sufficient to establish standing to sue for infringement). But Congress could easily have included licensee or exclusive licensee among the terms in 15 U.S.C. 1127 that define a registrant. It chose instead to limit standing to parties having a more specific set of

31

interests in the registered mark. A plaintiff therefore must show that its license amounts, in fact, to an assignment to establish entitlement to sue under Section 32(1). See 3 McCarthy 18:5 (Even though a contract states that it is a license, a court will not be governed by form, and the contract will be upheld as an assignment of trademark rights if that is its actual legal effect.); 3-11 Gilson on Trademarks 11.02(1)(b) (Gilson) (same). For the reasons discussed above with respect to the putative assignment, see Part II.A.1 & 2, plaintiffs allegations fall short here. As defined by United States law, FTE is not, in fact, the assign of the Marks, and therefore may not sue under Section 32(1) on that basis. In addition, we observe that plaintiffs complaint does not allege facts plausibly showing that FTE was granted an exclusive license to use or enforce the Marks, and none of the relevant documents suggest the Russian Federations intent to grant such an exclusive license. The complaint alleges that FTE is the only entity with the right to use and dispose of the Marks. Am. Compl. 136, J.A. 284. But that FTE was the only licensee when it filed the complaint does not establish that it held an exclusive license, especially in light of the absence of any suggestion of exclusivity in either the Charter or the July 2002 decree. Moreover, the complaint does not appear to suggest that FTE could exclude the Russian Federation from using the Marks, since

32

FTE acknowledges that its rights are limited by the Russian Federations ultimate ownership. Id.

4.

Special Considerations Concerning Foreign Government Trademark Holders

Plaintiffs also contend that we should ignore these legal restrictions on FTEs rights to sue with regard to the Marks and instead look generally to what we discern to be the policies underlying statutory limitations on seeking damages for trademark infringement. In particular, plaintiffs argue that policy interests in avoiding a multiplicity of suits are not implicated in this case because the Russian Federation has agreed by letter submitted to the District Court to be bound by this litigation.14 They urge further that comity considerations compel our court to afford the Russian Federation flexibility in determining how to protect its trademark rights and therefore to recognize FTE as an assign.

In May 2011, presumably at FTEs request, the Deputy Head of the Federal Service for the Regulation of the Alcohol Market of the Russian Federation sent a brief letter to the District Court declaring that the Russian Federation had empowered FTE to bring this litigation and that any final judgment on the merits of the claims for restoration of the trademark Stolichnaya brought by FTE . . . will be for the Russian Federation the final resolution of the court dispute with the defendants arising from the subject and grounds set out by FTE . . . in the relevant complaint (i.e., will have for the Russian Federation the same consequences as if the Russian Federation were a party to the abovementioned proceedings). Letter dated May 26, 2011 of V.V. Spirin to District Court, J.A. 458-59.
14

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We discuss some of these concerns in greater detail below, in the context of the claim that FTE is the legal representative of the Russian Federation. We agree that, in certain contexts, such policy considerations, like the interest in avoiding a multiplicity of suits, may help to guide the analysis of whether a party has standing to sue under the Act. Cf. Phoenix of Broward, Inc. v. McDonalds Corp., 489 F.3d 1156, 1164 (11th Cir. 2007) (stating that the risk of duplicative damages is a factor to be considered in deciding whether a plaintiff has standing to bring a false advertising claim under Section 43 of the Lanham Act). But the Russian Federation is not a party to this litigation, and a brief ad hoc letter to the Court from the current Deputy Director of an administrative agency, asserting that the Federation as a whole will in the future consider itself bound by the outcome of this litigation does not, in our view, eliminate the risk of duplicative and conflicting litigation. And even if such a letter did begin to assuage those concerns, such policy interests could not override our statutory analysis here. Further, we recognize that foreign states owning registered trademarks for commercial use may face a number of different and even challenging considerations in deciding how and when to enforce the rights protected by their internationally-deployed marks. We do not speculate why the Russian Federation settled on this particular arrangement with FTE as

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the means of pursuing any rights it had in the Marks or in particular of asserting its United States rights in the Marks. We observe, however, that the Lanham Act particularly in its provisions governing the assignment of trademarks and those relating to statutory standing to sue under the Act sets out formal requirements aligned with the policies it is designed to promote. Had the Russian Federation effected a valid assignment here, FTE could sue under Section 32(1) as an assign. As the relationship between the Russian Federation and FTE is now structured, however, it cannot, consistent with the Act. B. FTE Is Not a Legal Representative of the Russian Federation for Purposes of the Act We next consider whether FTE qualifies as a legal representative under the Act. The District Court concluded that FTE had to satisfy two conditions to achieve this status: [A] party qualifies as a legal representative under Section 32(1) of the Lanham Act if the party has the authority to appear on behalf of the registrant/owner with respect to the registrant/owners legal interests and the registrant/owner is unable or incapable of representing itself and enforcing its own rights. FTE III, 2011 WL 4005321, at *5 (emphasis in original). In this case, the District Court saw no adequate basis in the complaint or in the law for concluding that the

35

Russian Federation is legally incapable of representing itself, and therefore held that FTE did not qualify as a legal representative. Id. On appeal, FTE argues that the District Court interpreted the term legal representative too narrowly when it required that the real party in interest be legally incapable of representing itself. FTE submits that, as used in the Act, the phrase legal representative should be construed to include a part[y] exercising another persons rights over a trademark on that persons behalf. Appellants Br. 37. The interpretation of the phrase legal representative in the Lanham Act context appears to present a question of first impression in the federal courts of appeal. After review of the language and structure of the Lanham Act and the district court opinions on point, and remaining mindful of relevant comity concerns, we conclude that the District Court here correctly interpreted the phrase. Because FTE has failed to allege facts plausibly showing that it qualifies as a legal representative, it may not proceed in that capacity.

1. Interpretation of the Phrase Legal Representative

In its broadest usage, the phrase legal representative may refer simply to [o]ne who stands for or acts on behalf of another. Blacks Law Dictionary 1416 (9th ed. 2009) (defining representative). Often, however,
36

its meaning may be more precise. It may refer, for example, to an executor or administrator designated to act on behalf of a party who is incapable of acting on his own behalf, Rock-Ola Mfg. Corp. v. Filben Mfg. Co., 168 F.2d 919, 922 (8th Cir. 1948) (interpreting a contract including the phrase legal representative), or a trustee named to act on behalf of a party who, by law or agreement, is unauthorized to represent his own interests, see In re Casco Chem. Co., 335 F.2d 645, 651 (5th Cir. 1964) (concluding that a bankruptcy trustee is a legal representative for purposes of Federal Rule of Civil Procedure 60(b)). We must therefore look to the language and purposes of the Lanham Act to construe the phrase legal representative for present purposes. The text and structure of the Lanham Act support defendants interpretation. Section 32(1) expressly restricts standing to the registrant (which the Act expressly defines as the owner or, as we have said, his legal representatives, predecessors, successors and assigns). 15 U.S.C. 1127. By contrast, Section 43 of the Act allows suits by any person who believes that he or she is or is likely to be damaged by the defendants actions. 15 U.S.C. 1125(a)(1) (emphasis added). To interpret the phrase legal representative broadly would permit both the registrant of the trademark and his putative legal representative to file separate suits against the same defendant for the
37

same infringing act a result that seems inconsistent with Congresss stated intention to limit standing to the single registrant of the trademark under Section 32(1) as opposed to the broad standing afforded plaintiffs suing under Section 43. See Natl Licensing Assn v. Inland Joseph Fruit Co., 361 F. Supp. 2d 1244, 1255 (E.D. Wash. 2004) (Although the term legal representative is not defined by the Act, [a broad construction] would be inconsistent with the obvious intention to limit trademark infringement suits to those [who] have or had ownership interests in the trademark and the historically restrictive interpretation given to registrant.). Further, adopting FTEs interpretation of legal representative in this context namely, that a legal representative includes parties like FTE that have been given rights conferring control over trademarks ultimately owned by others, Reply Br. 1 would raise constitutional concerns, thus militating against that interpretation. It is well established that a party must demonstrate injury-in-fact to have constitutional standing, e.g., Lujan v. Defenders of Wildlife, 504 U.S. 555, 560 (1992), and that such injury must be particular to the claim raised and the relief sought, e.g., Davis v. Fed. Election Commn, 554 U.S. 724, 734 (2008). Applying Lujan, we have held that an investment manager to whom investor-clients had given power-of-attorney and significant authority over investment
38

decisions lacked constitutional standing to file a securities fraud claim on the clients behalf. W.R. Huff Asset Mgmt. Co. v. Deloitte & Touche LLP, 549 F.3d 100 (2d Cir. 2008) (Huff). In Huff we recognized that, consistent with Supreme Court precedent in Sprint Communications Co. v. APCC Services, 554 U.S. 269 (2008), the minimum requirement for an injury-in-fact is that the plaintiff have legal title to, or a proprietary interest in, the claim, even if that title was not originally held by the plaintiff but was received through an assignment made by the initial holder of the claim. Huff, 549 F.3d at 108. We also recognized a few . . . prudential exceptions to the injury-in-fact requirement, id. at 109, and we explained that these exceptions permit third-party standing where the plaintiff can demonstrate (1) a close relationship to the injured party and (2) a barrier to the injured partys ability to assert its own interests, id.; see also Kowalski v. Tesmer, 543 U.S. 125, 130-31 (2004). FTEs proposed interpretation of legal representative, however, would extend standing to parties whose sole interest in a trademarkinfringement action is a contractually-derived right to bring the claim, without owning the claim or having been assigned the claim, even if the actual trademark owner is capable of bringing suit on her own behalf. To ensure that our construction of the term legal representative avoids a
39

possible conflict with the requirements of Article III, we read it as requiring the trademark holders legally-recognized inability to assert a claim for infringement. Cf. Gollust v. Mendell, 501 U.S. 115, 125 (1991) (requiring plaintiff in shareholder-derivative suit to maintain a stake in the outcome of the litigation to avoid serious constitutional doubt whether that plaintiff could demonstrate the standing required by Article IIIs case-or-controversy limitation on federal court jurisdiction). FTE cites McClaskey v. Harbison-Walker Refractories Co., 138 F.2d 493 (3d Cir. 1943), in support of its argument for a broader reading of the phrase. In McClaskey, the court examined whether, under the patent laws, a sheriff could serve as the legal representative of a patent holder, and therefore be empowered to transfer a patent through a creditors sale of the patent holders assets. Id. at 494. The court permitted the sheriff to go forward, concluding that we can entertain no doubt that a patent may be reached and sold by a creditors bill. Id. at 495. FTE argues that because the Third Circuit did not consider whether the patent holder was unavailable to bring suit, the language legal representative in the context of the Lanham Act need not be read to include such a requirement. But McClaskey does not support FTEs argument. The courts holding there turned on the analogy it drew between the sheriff and a
40

trustee specifically appointed by a court for the purpose of disposing of a debtors property. Id. at 500. As we recognized in Huff, a trustees authority to bring suit on behalf of a trust (or otherwise represent a trust) flows from a special, legally-recognized obligation on the part of the trustee to protect the interests of the trust, which like the debtor and patent holder in McClaskey has become legally incapable of representing itself. See Huff, 549 F.3d at 109-10; see also Sprint, 554 U.S. at 287-88. In other words, even if we were bound by McClaskey, that opinion merely illustrates that a third party may serve as a legal representative, even where the represented party is physically present, so long as the represented party is somehow disabled from asserting the rights at issue. Cf. Sprint, 554 U.S. at 288 (finding that party with contractual obligation to litigate claim has Article III standing in situation where party was also assigned title to the claim).15 Finally, FTE argues that the District Courts interpretation of legal representative offends international comity by ignor[ing] the decisions made by a foreign sovereign to place trademarks and the commercial operations associated with them in the hands of a state enterprise. Appellants Br. at 46. International comity is a consideration

For the reasons stated above, we also find unconvincing a district court case that FTE has identified holding to the contrary of our view. See Idaho Potato Commn v. Wash. Potato Commn, 410 F. Supp. 171 (D. Idaho 1976).
15

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guiding courts, where possible, towards interpretations of domestic law that avoid conflict with foreign law. Linde v. Arab Bank, PLC, 706 F.3d 92, 111 (2d Cir. 2013). Considerations of comity are not, however, matters of absolute obligation. Id. (internal quotation marks omitted). Rather, the concept of comity calls for an examination of all of the relevant interests of all of the nations affected by the courts decision. Id. (emphasis omitted); see also Pravin Banker Assocs. v. Banco Popular Del Peru, 109 F.3d 850, 855 (2d Cir. 1997) ([E]xtending comity . . . is only appropriate if it is consistent with United States government policy.). Here, concern for international comity does not overcome the United States interests in enforcing its own trademark laws within its borders, or counsel the judicial creation of an exception to the Lanham Acts express requirements as consistently construed over time. Foreign sovereigns desiring to avail themselves of the protections of United States laws, particularly on commercial matters such as this, must observe United States prerequisites unless Congress directs otherwise. We thus conclude that to serve as a legal representative entitled to bring suit under Section 32(1) on behalf of a trademark holder, a putative plaintiff must demonstrate both its legal authority to represent the owner and that the trademark holder is legally incapable of representing itself.

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Applying that rule here, we observe that in neither the original nor the operative complaint did FTE allege that the Russian Federation was incapable of bringing this suit on its own behalf. FTE III, 2011 WL 4005321, at *5. Indeed, on appeal, FTE appears to acknowledge that the Russian Federation could appear in this suit; it now argues that the District Court should have permitted the Russian Federation to join or be substituted into this action. Appellants Reply Br. 27-28. Only an amicus brief submitted to this Court on behalf of the Russian Federation contends that the Russian Federation is unauthorized to appear in this litigation.16 Noting this discordance between plaintiffs and amicus, we decline to accord significant weight to the Federations argument both because it was not raised below and because an amicus brief is not a method for injecting new issues into an appeal. Universal City Studios, Inc. v. Corley, 273 F.3d 429, 445 (2d Cir. 2001).17
The Institute of Legislation and Comparative Law under the Government of the Russian Federation has moved for leave to file a brief as amicus curiae in support of plaintiffs-appellants, and has spoken to these questions in its amicus brief. That motion is GRANTED.
16

In any event, as defendants argue, Russian law may not bar the Russian Federation from suing in its own capacity. The Russian Civil Code provides, among other things, that the owner of property may demand the elimination of any violations of his right even though these violations are not combined with deprivation of possession. Russian Civil Code art. 304, SPA 78. Although the same chapter extends similar rights to parties who have claim to the property by right of . . . operative management, id. art. 305, SPA 78-79, nothing in the Code appears to prohibit the true owner in the case of the Marks, the Russian Federation from bringing suit to assert its rights. Indeed, the alleged
17

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In sum, since plaintiffs have failed sufficiently to allege that the Russian Federation is unable to appear in this litigation, FTE is not the Russian Federations legal representative for the purpose of bringing suit under Section 32(1) of the Lanham Act. C. The Russian Federation Has Not Ratified This Suit under Fed. R. Civ. P. 17 Sufficiently to Avoid Joinder FTE argues finally that even if it would ordinarily be unable to sue on its own for infringement of the trademarks at issue, its suit here should be permitted to proceed because the Russian Federation, as the real party in interest, has ratified the litigation by virtue of the May 2011 letter cited above. We cannot agree. Federal Rule of Civil Procedure 17(a) provides that [a]n action must be prosecuted in the name of the real party in interest, but that [t]he court may not dismiss an action for failure to prosecute in the name of the real party in interest until, after an objection, a reasonable time has been allowed for the real party in interest to ratify, join, or be substituted into the action. After ratification, joinder, or substitution, the action proceeds as if it had been originally commenced by the real party in interest. To ratify a suit, the real party in interest must (1) authorize continuation of the action and (2) agree to be bound by its result. ICON Grp., Inc. v. Mahogany Run Dev. Corp., 829 F.2d 473, 478 (3d Cir. 1987); see also Charles
infringement may cause different damages to the Russian Federation than to FTE.

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Alan Wright, Arthur R. Miller, Mary Kay Kane, Richard L. Marcus, 6A Fed. Prac. & Proc. 1555 (3d ed. 2013). Even accepting, based on the May 2011 letter (see supra, note 14) that the Russian Federation endorses FTEs authority to bring this suit and is willing to be bound by this litigation propositions that we have questioned plaintiffs cannot deploy Rule 17 to bypass the standing requirement of Section 32(1), which permits only registrants to bring actions for infringement of registered marks. The Rules Enabling Act, 28 U.S.C. 2072(b), provides that the Federal Rules of Civil Procedure shall not abridge, enlarge or modify any substantive right. Recently, a plurality of the Supreme Court instructed that we should consider a rule substantive for the purposes of the Rules Enabling Act if it alters the rules of decision by which the court will adjudicate those rights. Shady Grove Orthopedic Assocs., P.A. v. Allstate Ins. Co., 130 S. Ct. 1431, 1442 (2010) (plurality opinion) (alterations and internal quotation marks omitted). A rule is procedural, in contrast, if it governs only the manner and the means by which the litigants rights are enforced. Id. (internal quotation marks omitted). In this case, to extend standing to FTE through ratification under Rule 17(a) would do more than alter the manner and the means for
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enforcing the Russian Federations rights. Id. at 1442. To enlarge standing in this way would extend the entitlement to sue to a new party that is otherwise unauthorized under the statute at issue to bring suit to enforce whatever rights it may claim. Indeed, it would endow FTE with a right that is not now available at all to non-registrants under Section 32(1). Such a decision would amount to an improper expansion of the substantive rights provided by the Act. Stichting Ter Behartiging Van De Belangen Van Oudaandeelhouders In Het Kapitaal Van Saybolt Intl B.V. v. Schreiber, 407 F.3d 34, 49 (2d Cir. 2005) (The procedural mechanisms set forth in Rule 17(a) for ameliorating real party in interest problems may not, under the Rules Enabling Act, 28 U.S.C. 2072(b), be employed to expand substantive rights.); see also Parisi v. Goldman, Sachs & Co., 710 F.3d 483, 488 (2d Cir. 2013) (noting that the availability of a class action mechanism under Rule 23 cannot create a right to sue but rather presupposes the existence of a claim). Our Court previously rejected an argument similar to that of FTE in the context of the Copyright Act. See Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27 (2d Cir. 1982), superseded on other grounds

by Fed. R. Civ. Proc. 52(a). Because the copyright holder had purportedly
ratified the suit under Rule 17, the plaintiff in Eden Toys maintained that it too had standing to pursue a copyright action even though it had not
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registered the copyright. Declining to adopt that position, we explained: While Federal Rule of Civil Procedure 17(a) ordinarily permits the real party in interest to ratify a suit brought by another party, the Copyright Law is quite specific in stating that only the owner of an exclusive right under a copyright may bring suit. Id. at 32 n.3 (citations omitted).18 Similar reasoning requires us to reject FTEs contention here. D. Dismissal of Remaining Claims We also affirm the District Courts decision to dismiss Cristalls trademark infringement claims. In support of its asserted statutory standing to sue, Cristall alleges only that it obtained from FTE the exclusive right to produce STOLICHNAYA vodka for sale in the United States. Am. Compl. 6, J.A. 257. Its damages may be different from FTEs for any proven infringement, but Cristalls interest in the Marks is entirely derivative of FTEs. Because FTE lacks statutory standing to bring this trademark infringement claim, so does Cristall. We thus affirm the District Courts

We also reject FTEs argument that we should remand the case to the District Court to permit FTE to add the Russian Federation as a plaintiff through joinder or substitution under Rule 17(a). FTE has had ample time since 2004, when the original complaint was filed, to join the Russian Federation as a party and has failed to do so. As early as July 2005, defendants argued that FTEs complaint should be dismissed for failure to join the Russian Federation. Further, as described above, our October 2010 summary order expressed concerns about whether the Russian Federation should be joined in this litigation, see 400 F. Appx at 614, and yet the Third Amended Complaint did not add the Russian Federation as a plaintiff. It is simply too late.
18

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dismissal of Cristalls Claim 1 (federal trademark infringement) and Claim 2 (contributory trademark infringement). As to Claim 3 (declaratory judgment of ownership), Claim 4 (rectification of the trademark register), and Claim 5 (cancellation of register under Section 37 of the Lanham Act), asserted by both FTE and Cristall, we conclude that the District Court properly held that, absent Lanham Act standing to sue for infringement, plaintiffs also lack standing to seek these remedies, which the District Court termed ownership-bolstering relief under the Lanham Act. See McCarthy 30:110 (Lanham Act 37 assumes a properly instituted and otherwise jurisdictionally supportable action involving a registered mark.). Finally, we affirm the District Courts decision not to exercise supplemental jurisdiction over plaintiffs related state law misappropriation claim (Claim 6). We review that decision for abuse of discretion. Spiegel v. Schulmann, 604 F.3d 72, 78 (2d Cir. 2010) (per curiam). Absent a basis for adjudicating the federal claims, it was well within the District Courts discretion to go no further. CONCLUSION To summarize: for the reasons stated above, plaintiff FTE is neither an assign of the Russian Federation nor the Federations legal
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representative under the terms of the Lanham Act. It may not sue under the Act as an exclusive licensee, and the document plaintiffs tender as reflecting the Russian Federations ratification of the suit does not entitle plaintiffs to proceed. Because Cristalls rights are derivative of FTEs, it too lacks standing under the Act. The decision of the District Court is AFFIRMED.

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